United States District Court, W.D. Washington, Seattle
MILO & GABBY, LLC, and KAREN KELLER, an individual, Plaintiffs,
AMAZON.COM, INC., Defendant.
ORDER GRANTING IN PART AND DENYING IN PART
DEFENDANT'S MOTION FOR SUMMARY JUDGMENT
RICARDO S. MARTINEZ UNITED STATES DISTRICT JUDGE.
matter comes before the Court on Defendant's Motion for
Summary Judgment on the remaining claims in this action. Dkt.
#30. Defendant, Amazon.com, Inc. (“Amazon”),
argues that it is entitled to summary judgment on
Plaintiffs' remaining claims for direct patent
infringement, direct copyright infringement, false
designation of origin under the Lanham Act, and violation of
the Digital Millennium Copyright Act, primarily because the
alleged infringing actions were committed by third-party
vendors and not Defendant. Id. Plaintiffs argue in
opposition that Defendant is liable under several theories of
law, including vicarious liability, such that summary
judgment is precluded. Dkt. #36. Having reviewed the
parties' briefing, and having determined that no oral
argument is necessary on this motion, the Court disagrees
with Plaintiffs in part and GRANTS IN PART and DENIES IN PART
MILO & GABBY, LLC is a Washington State limited liability
company that designs and sells animal-shaped pillow cases,
among other accessories and bedding products. Plaintiff Karen
Keller and her husband are the founders and product designers
of Milo & Gabby, LLC (“Milo & Gabby”).
Dkt. #1 at ¶ 7. According to Ms. Keller, the
couple's four children and two family pets inspired the
Kellers to create the Cozy Companion Pillowcases product line
for Milo & Gabby. Dkt. #1 at ¶ 7. The line consists
of eight animal shaped pillowcases that function as a
combination between a pillow and a stuffed animal.
are the authors and owners of various U.S. Copyrights and
U.S. Design Patents. See Id. at ¶ 10. On
September 11, 2007, the Milo & Gabby design mark was
registered with the U.S. Patent and Trademark office and was
assigned U.S. Trademark Registration Number 3291697.
Id. at ¶ 8. In addition, Milo & Gabby's
website and marketing images are protected by valid U.S.
copyrights. Id. at ¶ 10.
several years, Milo & Gabby has designed, sold, and
distributed its products to retailers and e-tailers
throughout the United States and internationally.
Id. at ¶ 11. During this time, Milo &
Gabby's animal-themed children's accessories have
seen commercial success. Id. In 2012, Milo &
Gabby entered into an exclusive license arrangement in Asia,
and since then the company has made promising gains.
Id. Milo & Gabby aims to further expand its
operations by entering into license agreements throughout
North America. Id. at ¶ 12. However, Milo &
Gabby claims these efforts were halted when Amazon.com
allegedly began selling direct knock-off copies of Milo &
Gabby's Cozy Companion Products. Id. at ¶
is a company that operates a widely used internet service
retail website at http://www.amazon.com. Dkt. #35 at
¶ 2. Amazon.com enables third-party vendors to sell and
distribute a variety of products to the public, while Amazon
“fulfills” the orders through Amazon.com. Dkt.
#35 at ¶ ¶ 2-3 and 11.
third-party seller wants to offer a new product for sale on
the Amazon.com platform, the third-party seller is
responsible for sending Amazon, via an automated file upload
system, content related to the new product, such as a product
description, an image of the product, and the product's
price. Id. at ¶ 5. This content is used to
automatically generate a “product detail page”
and, in some instances, to create advertisements related to
the new product. Id. at ¶ 6; Dkt. #33 at ¶
4; and Dkt. #32 at ¶ 2. The third-party seller is
responsible for the uploaded content, and specifically
represents and warrants that it has the right to grant Amazon
a license to use all content, trademarks, and other materials
provided by it. Dkt. #35, Ex. A at ¶ ¶ 4-5 &
Definitions and Ex. B. Under Amazon's Intellectual
Property Violations Policy, third-party sellers are
responsible for ensuring that the products they offer for
sale are legal. Id. at ¶ 9 and Ex. D. With
respect to images, third-party sellers agree that it is their
responsibility to “ensure that [they] have all the
necessary rights for the images [they] submit.”
Id. at ¶ 10 and Ex. E.
sellers may ship their products to customers directly or, for
a fee, use the “Fulfillment by Amazon”
(“FBA”) service. Dkt. #34 at ¶ 2.
Third-party sellers who use Amazon's FBA service retain
legal title to their products, while Amazon provides
fulfillment services for the products, such as storage and
shipping. Id. at ¶ ¶ 3-4.
allege that Amazon offered and sold infringing pillowcases
via Amazon.com, using their marks and copyrighted images in
the pillowcase offerings. Plaintiffs contends that Amazon is
“the real ‘seller' of the knock-off
products” because: (1) the “products are
advertised on the amazon.com domain”; (2)
“[p]ayment is made directly to Amazon”; (3)
“Amazon issues the invoice and tracking
information”; (4) “Amazon ships the products in a
box that bears the ‘Amazon' logo”; and (5)
“Amazon broadcasts email advertisements from its own
account (not the manufacturer's) offering the knock-off
products.” Dkt. #11 at 3.
according to Amazon, all allegedly infringing pillowcases at
issue in this case were offered and sold by third-party
sellers. Dkt. #35 at ¶ 15. Amazon is not the seller of
record for any of the allegedly infringing pillowcases.
Id. and Dkt. #1, Ex. C. The content for the
allegedly infringing pillowcases (including product name,
description, and images) displayed by Amazon was provided by
third-party sellers. Dkts. #35 at ¶ 16; #33 at ¶ 3;
and #32 at ¶ 3. Amazon did not actively copy any of
Plaintiffs' images. Dkt. #35 at ¶ 16. Nor did Amazon
alter, modify, or remove any copyright registration
information, or other information, related to any images or
content supplied by third-party sellers in conjunction with
third-party seller offerings of the allegedly infringing
pillowcases. Id. In fact, all images and other
content provided to Amazon by third-party sellers did not
contain any visible patent, copyright, or trademark
registration information. Id. Amazon did provide FBA
services to one of the third-party sellers (FAC System LLC)
that offered allegedly infringing pillowcases. Id.
at ¶ 17.
receipt of the instant lawsuit in October 2013, Amazon
investigated Plaintiffs' allegations and removed within
days the allegedly infringing pillowcase offerings. Dkt. #35
at ¶ 20. During the course of this case, additional
third-party sellers have offered allegedly infringing
pillowcases. Id. at ¶ 21. As soon as Amazon
learned of, or was made aware of, the additional allegedly
infringing offerings, Amazon also promptly removed the
October 24, 2013, Plaintiffs filed the instant lawsuit
alleging that Amazon was using Plaintiffs' intellectual
property to wrongfully market, sell, and distribute
inferior-quality knockoffs of Plaintiffs' animal-shaped
pillowcases on the amazon.com website. On April 11, 2014, the
Court granted Defendant's Rule 12(b)(6) motion and
dismissed Plaintiffs' claims for unfair competition under
Washington's Consumer Protection Act; right of publicity;
and trademark counterfeiting. Dkt. #13. The Court also struck
Plaintiffs' claim for patent infringement based on any
allegation of induced, contributory, or willful patent
infringement, as well as Plaintiffs' claim for indirect
copyright infringement. Id. The parties have since
attempted to resolve this matter and have agreed that a
Markman hearing is not necessary as the patents at
issue are design patents. Accordingly, the instant motion is
now ripe for review.
Plaintiffs' Overlength Brief
initial matter, the Court addresses Plaintiffs'
overlength brief which was filed without permission of the
Court. This Court's Local Rules specifically provide that
motions for summary judgment and briefs in opposition thereto
shall not exceed 24 pages in length. LCR 7(e)(3). Further,
the Rules provide that, while disfavored, parties may seek
permission to file overlength briefs, and such requests must
be filed three days prior to the date the underlying brief is
due. LCR 7(f). No such permission was sought by Plaintiffs in
this case. Rather, Plaintiffs simply filed a 32-page
opposition brief. Dkt. #36. Because Plaintiffs did not seek
permission to file eight extra pages of briefing, the Court
refuses to consider certain text not contained within the
applicable page limits. LCR 7(e)(6). In this case, in an
effort to review the substantive arguments made by
Plaintiffs, the Court will exclude from consideration the
first five pages of the brief, which encompass the
introduction, summary judgment standard and a motion to
strike certain of Defendant's declarations supporting its
motion for summary judgment. Dkt. #36 at 1-5. The Court also
will not consider the final page of the brief, which consists
of a one-sentence conclusion. DKt. #36 at 2. The Court will
consider Plaintiffs' substantive arguments contained at
pages 5-31 of their brief.
Plaintiffs' Motion to Strike
Plaintiffs' motion to strike will not be considered, the
Court will review all evidentiary material presented by
Defendant, and will afford it due consideration as discussed
Legal Standard on Summary Judgment
judgment is appropriate where “the movant shows that
there is no genuine dispute as to any material fact and the
movant is entitled to judgment as a matter of law.”
Fed.R.Civ.P. 56(a); Anderson v. Liberty Lobby, Inc.,
477 U.S. 242, 247 (1986). In ruling on summary judgment, a
court does not weigh evidence to determine the truth of the
matter, but “only determine[s] whether there is a
genuine issue for trial.” Crane v. Conoco,
Inc., 41 F.3d 547, 549 (9th Cir. 1994) (citing
Federal Deposit Ins. Corp. v. O'Melveny &
Meyers, 969 F.2d 744, 747 (9th Cir. 1992)). Material
facts are those which might affect the outcome of the suit
under governing law. Anderson, 477 U.S. at 248. A
factual dispute is “genuine” if the evidence is
such that reasonable persons could disagree about whether the
facts claimed by the moving party are true. Aydin Corp.
v. Loral Corp., 718 F.2d 897, 902 (9th Cir. 1983). [T]he
issue of material fact required . . . to be present to
entitle a party to proceed to trial is not required to be
resolved conclusively in favor of the party asserting its
existence; rather, all that is required is that sufficient
evidence supporting the claimed factual dispute be shown to
require a jury or judge to resolve the parties' differing
versions of the truth at trial. First Nat. Bank of Ariz.
v. Cities Serv. Co., 391 U.S. 253, 288-89, 88 S.Ct.
1575, 20 L.Ed.2d 569 (1968).
Court must draw all reasonable inferences in favor of the
non-moving party. See O'Melveny & Meyers,
969 F.2d at 747, rev'd on other grounds, 512
U.S. 79 (1994). However, the nonmoving party must make a
“sufficient showing on an essential element of her case
with respect to which she has the burden of proof” to
survive summary judgment. Celotex Corp. v. Catrett,
477 U.S. 317, 323 (1986). Further, “[t]he mere
existence of a scintilla of evidence in support of the
plaintiff's position will be insufficient; there must be
evidence on which the jury could reasonably find for the
plaintiff.” Anderson, 477 U.S. at 251.
Direct Copyright Infringement
allege that Amazon publicly displayed Plaintiffs'
copyrighted images on the Amazon.com website and distributed
allegedly infringing goods with Plaintiffs' copyrighted
images on the product labels in violation of established
copyright laws. Dkt. #1 at ¶¶ 28-31. Defendant
argues that this claim must be dismissed because there is no
evidence that Amazon actively participated in, or directly
caused, the alleged copying of Plaintiffs' images, and
even if there was such evidence, Amazon is immune from
liability under the Section 512(c) safe harbor provision of
the Digital Millenium Copyright Act (“DMCA”). The
Court agrees with Defendant.
Direct Copyright Infringement
establish a claim of copyright infringement by reproduction,
the plaintiff must show ownership of the copyright and
copying by the defendant.'” Fox Broad. Co. v.
Dish Network L.L.C., 747 F.3d 1060, 1066-67 (9th Cir.
2014) (quoting Kelly v. Arriba Soft Corp., 336 F.3d
811, 817 (9th Cir. 2003)); see also 17 U.S.C.
§§ 106(1), 501(a). Accordingly, infringement of the
reproduction right requires “copying by the
defendant, ” which comprises a requirement that the
defendant cause the copying. Fox Broad. Co., 747
F.3d at 1067 (emphasis added; citations omitted). In this
case, there is no evidence in the record that Amazon actively
reviewed, edited, altered or copied Plaintiffs' images.
See Dkt. #35 at ¶ ¶ 17-18. Rather, the
content of the website was provided by a third-party vendor,
and was handled in an entirely automated manner to generate
product detail pages or ads. Dkts. #35 at ¶ 6; #33 at
¶ 3; and #32 at ¶ 2. Plaintiffs respond with two
arguments - first, that Defendant is vicariously liable for
the third-party's infringement, and second, that
Defendant is liable for direct infringement because it
accepts and stores the infringing images. Dkt. #36 at 7-21.
Court first addresses Plaintiffs' vicarious liability
arguments. Dkt. #36 at 7-12 and 14-21. A defendant is
vicariously liable for copyright infringement if he enjoys a
direct financial benefit from another's
infringing activity and “has the right and ability to
supervise” the infringing activity. Ellison v.
Robertson, 357 F.3d 1072, 1076 (9th Cir. 2004)
(citations omitted). “Financial benefit exists where
the availability of infringing material ‘acts as a
“draw” for customers.'” Id. at
1078 (citations omitted).
have never raised this theory of vicarious liability in their
Complaint, nor have they alleged any facts in their Complaint
providing notice to Defendant that they intended to advance
such a theory. See Dkt. #1. Rather, Plaintiffs have
alleged that Amazon, “without authorization, is
distributing copies of Milo & Gabby's copyrighted
works as the Amazon knock-offs and as labels on the Amazon
knock-offs. . . ., is publicly displaying numerous Milo &
Gabby copyrighted images on the amazon.com website. . . .,
[and] is distributing numerous Milo & Gabby copyrighted
images on the labels of its Amazon knock-off products. . . .,
[in] violation of the U.S. Copyright Act, 15 U.S.C. §
501, et. seq.” Dkt. #1 at ¶¶ 29-32;
see also Dkt. #1 at ¶¶ 7-24. After the
Court previously examined this copyright infringement claim
and dismissed it to the extent the claim was based on a
theory of indirect trademark infringement, Dkt. #13, the only
remaining basis for the claim has been direct infringement.
Plaintiffs never moved to amend the Complaint to add a claim
for vicarious infringement or seek clarification that any
theory of vicarious infringement had not been subsumed in the
Court's ruling on indirect infringement. Accordingly, the
Court will not consider Plaintiffs' vicarious liability
arguments. Pickern v. Pier 1 Imports (U.S.), Inc.,
457 F.3d 963, 965 (9th Cir. 2006) (finding that a district
court need not address allegations raised for the first time
in response to a motion for summary judgment if the
plaintiff's “pleadings did not provide sufficient
notice of those allegations.”); Williams v. Fed.
Express Corp., 2013 U.S. Dist. LEXIS 72722 at *25 (W.D.
Wash. May 22, 2013) (dismissing a claim on the basis that a
plaintiff may not assert new causes of action or theories of
recovery for the first time in an opposition to a motion for
the Court turns to Plaintiffs' argument that
Defendant's acceptance and storage of the alleged
infringing images alone is enough to violate the Copyright
Act. Dkt. #36 at 12-14. Central to a finding of direct
copyright infringement is the principle that a defendant must
“actively” engage in one of the protected
activities under the Copyright Act. In Perfect 10, Inc.
v. Cybernet Ventures, Inc., 213 F.Supp.2d 1146 (C.D.
Cal. 2002), the Central District of California collectively
examined cases involving liability and computer technology.
The Perfect 10 Court noted that the Ninth Circuit
and other District Courts have repeatedly rejected arguments
of direct infringement where software or hardware schemes
automatically produce copies of the allegedly infringing
images and the defendants do not actively participate in such
activity. Perfect 10, 213 F.Supp.2d at 1167-69. The
Court also noted that other courts had found direct
infringement where the defendants were:
encouraging subscribers to upload files onto its system,
viewing the files in the upload file, and then
moving the uploaded files into files generally available to
subscribers. This transformed the defendants from passive
providers of a space to active participants in the process of
copyright infringement. The moving of the files, accomplished
by employees constituted the distribution, and the display of
those copies after the BBS's employees placed
the files there violated the right of display.
Perfect 10, 213 F.Supp.2d 1168 (citations omitted;
emphasis in original).
instant case, the Court finds the circumstances more akin to
those where software or hardware schemes automatically
produce copies of the allegedly infringing images and the
defendants do not actively participate in such activity.
Indeed, the evidence in the record demonstrates that the
content of the detail pages and advertisements was supplied
by third-parties via an automated file upload system, and did
not originate from Amazon. Dkts. #33 at ¶ 4; #32 at
¶; and #35 at ¶ ¶ 6 and 17. This evidence has
gone un-refuted by Plaintiffs. Thus, it does not appear that
Amazon actively participated in the alleged copying of the
digital images at issue.
the Court rejects Plaintiffs' contention that Amazon is
liable for trademark infringement based on its sales and
shipment of physical items. Here, the evidence demonstrates
that Amazon is not the seller of the alleged infringing
products. See Dkt. #35 at ¶ 12. Likewise,
third-party sellers retain full title to and ownership of the
inventory sold by the third party. Dkt. #34 at ¶ 4.
Plaintiffs have provided no evidence to the contrary with
respect to any specific third party involved with the
products in this case. Accordingly, the Court concludes that
Amazon was not the seller of the products at issue here.
Hendrickson v. Amazon.com, Inc., 298 F.Supp.2d 914,
915 (C.D. Cal. 2003) (holding that under similar
circumstances Amazon was an internet service provider for the
third party and not a seller).
Safe Harbor ...